On April 1, 2016, the United States Patent and Trademark Office (“USPTO” or “Office”) published a 17-page notice (“Notice”) in the Federal Register of a final rule that “amends the existing consolidated set of rules relating to . . . trial practice for inter partes review (“IPR”), post-grant review (“PGR”), the transitional program for covered business method patents (“CBM”), and derivation proceedings.”10 The amendments are effective May 2, 2016.11 The final rule is largely the same as the amendments the USPTO proposed on August 20, 2015, and also includes responses to public comments made concerning the August proposal.

The USPTO summarizes the amendments as:

  • “allowing new testimonial evidence to be submitted with a patent owner’s preliminary response”;
  • “adding a Rule 11-type certification for papers filed in a proceeding”;
  • “allowing a claim construction approach that emulates the approach used by a district court following Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) . . . for claims of patents that will expire before entry of a final written decision”; and
  • “replacing the current page limit with a word count limit for major briefing.”12

Also of note is the one area in which the Office has decided not to implement its August proposals. In the Notice, the Office indicates that, while it “sought comments [in August] on whether to conduct a pilot program under which the determination of whether to institute a trial would be made by a single APJ, . . . [t]he majority of comments opposed the proposed pilot program.”13 Therefore, “the Office has decided not to go forward with the proposed pilot program at this time.”14

Of the four bulleted changes above, the “new testimonial evidence” and the “Phillips-type Claim Construction Analysis” are the most interesting to practitioners, and are explored further herein.

New Testimonial Evidence to be Submitted with a Patent Owner’s Preliminary Response

The USPTO, responding to patent owners’ complaints that they are at a disadvantage in post-grant proceedings, will allow patent owners to include expert declarations and other testimonial evidence in the optional preliminary response to a petition.15

However, the USPTO does not shift the advantage that significantly in Patent Owner’s direction, explaining that, “[b]ecause the time frame for the preliminary phase of an AIA proceeding does not allow generally for cross-examination of a declarant before institution as of right, nor for the petitioner to file a reply brief as of right, . . . any factual dispute created by testimonial evidence that is material to the institution decision will be resolved in favor of the petitioner . . . for purposes of determining whether to institute a trial.”16 And, further, “a panel, in its discretion, may order some limited discovery, including cross-examination of witnesses, before institution,” 17 thus giving Petitioner a chance to test the strength of the expert or other testimonial evidence. The USPTO also warns against any pre-institution shenanigans, stating in the Notice that, “if the testimony is withdrawn at the trial stage, the Board would have to consider whether cross-examination falls within the scope of additional discovery,”18 and that “submission of patent owner testimonial evidence at the preliminary stage may warrant granting petitioner a reply to such evidence.”19

A Phillips-type Claim Construction Analysis

Regarding claim construction, the Office has “determined to permit either party to request by motion a Phillips-type construction if a party certifies that the patent will expire within eighteen months from the entry of the Notice of Filing Date Accorded to Petition.”20 The Office requires that the request “must be done by motion, triggering a conference call with the panel to discuss the request to resolve whether such a motion is appropriate under the circumstances and whether any other briefing is necessary.”21 The Office indicates that it anticipates hearing from the parties early on this issue, explaining that “petitioner may be afforded an opportunity to address a Phillips-type construction analysis before patent owner is required to file its preliminary response.”22 The Office even contemplates that the “necessary” early briefing would mean that “the petitioner may be able to brief an alternative construction before patent owner files its preliminary response” wherein the petitioner’s “claim construction may differ from what a petitioner has presented in its petition.”23

In the Notice, the USPTO indicates that some commenters wished to expand the Phillips-type construction analysis to all AIA post-grant proceedings, regardless of the life remaining on the patent-at-issue, but the USPTO rejects the idea.24 The USPTO posits that quality assurance and consistency across its various claim examination proceedings is of paramount importance, and that the broadest reasonable interpretation standard is a useful tool for ensuring both.25 The USPTO appears to recognize that the Patent Owner’s ability to amend is an important underpinning to the broadest reasonable interpretation standard (“[a]ppropriate rationales exist to apply the broadest reasonable interpretation claim construction standard when there is an ability to clarify claim scope”), but insists that the “opportunity to amend exists.”26 The USPTO, as it has previously, reiterates the justification for the difficulty it presents to Patent Owners who seek to amend their claims:

The Board does not conduct a prior art search to evaluate the patentability of the proposed substitute claims, and any such requirement would be impractical given the statutory structure of AIA proceedings. If a motion to amend is granted, the substitute claims become part of an issued patent, without any further examination by the Office. Because of this constraint, the Office has set forth rules for motions to amend that account for the absence of an independent examination by the Office where a prior art search is performed as would be done during prosecution of a patent application, reexamination, or reissue.27

Interestingly, the USPTO indicates in the Notice that “relevant prosecution history should be considered when specifically cited, explained, and relied upon by the parties,”28 leaving one to wonder what exactly is the difference between the broadest reasonable interpretation standard and a Phillips-type construction analysis.